OPPOSITION No B 2 641 507

Hama GmbH & Co. KG, Dresdner Str. 9, 86653 Monheim, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Euroinversiones Arabi S.L., Ctra. Valencia s/n, 30510 Yecla (Murcia), Spain (applicant), represented by Mª Encina Rodriguez López, C/ Garcia Morato, n° 11, Entreplanta Izquierda, 03004 Alicante, Spain (professional representative).

On 22/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 641 507 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 431 316 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 431 316. The opposition is based on, inter alia, German trade mark registration No 302 009 047 814. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submits proof of use of the German trade mark No 2 874 740. However, this number does not coincide with the only earlier German right of the opponent, namely the German trade mark registration No 302 009 047 814.

In the present case the contested trade mark was published on 14/10/2015.

In relation to German marks, the following applies:

Insofar as use within five years from the point in time of the registration is necessary, in cases in which an opposition has been lodged against the registration, the time of the registration shall be substituted by the point in time of the conclusion of the opposition proceedings.

The request for proof of use was filed in relation to a mark which is not part of this opposition procedure. Even taking into account the only earlier German mark, the request is still not valid as the opposition proceedings terminated in Germany only on 23/05/2014. Thus, the request for proof of use was not valid.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier German trade mark No 302 009 047 814.

1. The goods and services

The goods and services on which the opposition is based are, among others, the following:

Class 20: Furniture, mirrors, picture frames; goods, included in this class, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; office furniture; massage tables; massage chairs; cases of wood or plastic; packaging containers of plastic; closures, not of metal, for containers; childproof closures for lockers and doors (not of metal, non-electric); door latches and handles, not of metal; door fittings, not of metal; figurines (statuettes) of wood, wax, plaster or plastic; decorations of plastic for foodstuffs; mobiles (decoration); wind chimes (decoration); coat hangers; clothes hooks, not of metal; house numbers, not of metal, non-luminous; plugs (dowels), not of metal; cable clips, not of metal; valves, not of metal, other than parts of machines; coatstands; accessories for fireplaces, namely log baskets, spark guard devices for fireplaces and furnaces of glass and/or fire resistant plastic.

Class 24: Textiles and textile goods included in this class; bed and table covers; household linen; place mats, not of paper; table napkins of textile.

Class 35: Advertising; business management; business administration; office functions; wholesale and retail services in regard to chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, unprocessed artificial resins, unprocessed plastics, manures, fire extinguishing compositions, tempering and soldering preparations, chemical substances for preserving foodstuffs, tanning substances, adhesives used in industry, paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, Industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, sates, goods of common metal, ores, machines and machine tools, motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles), agricultural implements other than hand-operated, incubators for eggs, hand tools and implements (hand-operated), cutlery, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, addler g, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, musical instruments, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists´ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers´ type, printing blocks, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, not of metal, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and addler, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, textiles and textile goods, bed and table covers, clothing, footwear, headgear, games and playthings, gymnastic and sporting articles, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice.

The contested goods and services are the following:

Class 20: Furniture, Mattresses, Bed bases, Settees, Pillows, Bed surrounds, Bed backrest, Pouffes, Sofas, Cushions, Upholstered furniture, Upholstered bed bases being fixed and/or folding, not including bedding.

Class 24: Bed clothes.

Class 35: Retailing and wholesaling in shops and/or global computer networks of furniture, beds, mattresses, spring mattresses, settees, pillows, bed linen, electric and electronic massage systems for mattresses, air-conditioning systems based on textiles, electronic presence systems for mattresses, temperature measuring elements, thermometers for mattresses, electronic lighting elements, lamps, LEDs and optical fibres for bedrooms, and sound-absorbing textiles for mattresses; Services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term namely, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 20

Furniture is identically included in both lists of goods and services.

The contested Bed bases, Settees, Bed surrounds, Bed backrest, Pouffes, Sofas, Upholstered furniture, Upholstered bed bases being fixed and/or folding, not including bedding are included in the broad category of the opponent´s furniture and therefore are identical.

The contested Mattresses, Pillows, Cushions are similar to the opponent´s goods furniture as they can coincide in end user and distribution channels. Furthermore they are complementary.

Contested goods in Class 24

The contested bed clothes overlap with the opponent´s goods bed covers and are therefore identical.

Contested services in Class 35

The contested retailing and wholesaling in shops and/or global computer networks of furniture, beds, settees, bed linen, electronic lighting elements, lamps, LEDs for bedrooms are included in the opponent’s services wholesale and retail services in regard to furniture, household linen, apparatus for lighting and therefore identical.

The contested retailing and wholesaling in shops and/or global computer networks of mattresses, spring mattresses, pillows, electric and electronic massage systems for mattresses, air-conditioning systems based on textiles, electronic presence systems for mattresses, temperature measuring elements, thermometers for mattresses, optical fibres for bedrooms, and sound-absorbing textiles for mattresses are similar to the opponent’s services wholesale and retail services in regard to furniture. Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered similar.

The contested services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises are included in the broad category of the services business management of the opponent and are therefore identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

HAMA
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word mark HAMA.

The contested mark is a figurative mark which consists of the verbal elements “K*AMA” written in standard font green upper case letters. After the initial letter “K” there is a representation of vertical and horizontal lines which at least a substantial part of the relevant public will perceive as the letter “H”. The Opposition Division will proceed with the examination of the opposition for the part of the public that will perceive the second character of the contested mark as the letter H.

The marks in comparison have no elements which could be considered to be more distinctive or dominant than other elements.

Visually, the signs coincide in ‘HAMA’. However, they differ in the initial letter ‘K’ in the contested sign and in the graphical representation of the letter “H” as well as the colour green of the letters in the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HA-MA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛K’ at the beginning of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are identical or similar.

The signs are visually and aurally similar to an average degree, while they do not convey any concept which would help to distinguish safely between the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Even though the signs differ in their first letter (H versus K), it is still undeniable that the earlier mark is fully reproduced in the contested mark, taking into account that the representation of the letter “H” is somewhat stylised. Both marks have no meaning in German, thus the consumer may be confused as to the commercial origin in relation to identical and similar goods and services.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 009 047 814. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right ‘HAMA’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Swetlana BRAUN

Lars HELBERT

Claudia MARTINI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.